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Judge Kennelly Weighs In on Whether Complaint Can Establish Notice for Willfulness

Andrew E. Russell, Sept. 21, 2022
FRCP 12(b)(6) Post-Filing Willfulness

An AI-generated (!!) scene of a split courthouse
AI-Generated, displayed with permission

We've written a lot about how there is a split in the District of Delaware about whether a complaint itself can establish knowledge of infringement sufficient to support a claim of post-filing willfulness or induced infringement.

Early this week, visiting Judge Kennelly weighed in, siding with the judges who say that a complaint can establish knowledge, in a short opinion:

A claim for willful infringement of a patent requires the plaintiff to establish—or at this point in the case, to plausibly allege—that the accused infringer had knowledge of or was willfully blind to the patent and that its conduct constituted, induced, or contributed to infringement. . . . Similarly, a claim of induced or contributory infringement …
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How Much Information Do You Need in a Joint Status Report in the District of Delaware? Another Data Point

Andrew E. Russell, Sept. 19, 2022
Joint Status Report Sua Sponte

Our status report, your honor? We're all good.
Our status report, your honor? We're all good. Sincerely Media, Unsplash

As we've mentioned in the past, in D. Del. patent cases, the Court often sets deadlines for submission of a "status report" (or, sometimes, a "joint status report" or "interim status report").

These orders can be somewhat vague. The Court doesn't always request "a joint status report regarding xyz." Instead, at times, it will issue a generic request for a status report, like this:

ORAL ORDER - IT IS HEREBY ORDERED that, on or before 9/23/2022, the parties shall submit a joint status report. ORDERED by Judge Maryellen Noreika on 9/16/2022.

To which the natural human response is "a status report about what?" Usually, though, it's pretty obvious from the docket. In the case above, C.A. No. 21-459-MN, the case is stayed pending appeal of another case, and the order follows a more than year-long delay with no action. The Court probably wants to know the status of the appeal.

The next question is often "how much detail does the Court want?" The answer seems to vary depending on the context. It's usually safe to assume that the Court does not want disputes or argument from the parties, and that it likely appreciates a concise statement of only what the Court needs to know to take action. But it can be hard to say for sure ...

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Judge Williams' Form Patent Scheduling Orders Mirror Judge Noreika's—With Some Changes

Andrew E. Russell, Sept. 14, 2022
Scheduling Orders Vacant Judgeship

Quilt
Olga Ferina, Unsplash

Judge Williams has now posted his form scheduling orders on the District of Delaware website.

I took a look through his non-ANDA scheduling order, and it will be extremely familiar to Delaware practitioners. It mostly tracks Judge Noreika's form order.

Judge Williams' form order does, however, pull in portions from other Delaware judges' form scheduling orders. Here are some changes in Judge Williams' new form order as compared to Judge Noreika's form:

  • Discovery disputes and motions to amend or strike use language from Judge Stark's form scheduling order.
    • Parties sometimes get tripped up on this, and forget that motions to amend or strike have special rules—so keep that in mind if you have a Judge …
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Chief Judge Connolly Orders Plaintiffs’ Individual Owners to Appear for In-Person for Evidentiary Hearings Regarding Compliance with His Standing Orders—in at least 14 Different Cases

Andrew E. Russell, Sept. 12, 2022
Litigation Funding Standing Orders

Bullet Holes
Mykola Makhlai, Unsplash

At this point it's clear that Chief Judge Connolly's standing orders regarding initial disclosures and litigation funding are no joke, and plaintiffs need to comply with them or risk consequences.

Today, the Court took the further step of requiring the owners of plaintiff entities in at least 14 cases to appear in-person for evidentiary hearings regarding compliance with his standing orders.

The orders today generally took the following form:

Whereas the amended corporate disclosure forms Plaintiff filed in the above-captioned cases identify [owner name(s)] as Plaintiff s owner; and
Whereas the Court has concerns about whether Plaintiff has complied with the Court's standing order regarding third-paty litigation funding [or about the accuracy of the …
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Non-Infringement Is No Reason to Withhold Core Technical Documents, At Least When the Infringement Allegation is Not Baseless

Andrew E. Russell, Sept. 7, 2022
Infringement Contentions Core Technical Documents

Television
Ajeet Mestry, Unsplash

Last week Magistrate Judge Burke ruled on a core technical documents dispute in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 21-1592 (D. Del.). The defendants sought to avoid production of core technical documents for a product that was accused but that could not infringe. Judge Burke rejected that position:

Defendant shall produce core technical documents for the Logitech-based system. . . . [I]f the Court did not allow discovery of properly-accused products every time a defendant said that its product did not infringe the patent-in-suit, there would be little to no discovery permitted in the patent cases in this Court.

He suggested that the infringement allegation here was not completely baseless, and that whether the product meets the claims depends on claim construction:

The real dispute here appears to be about whether a product can infringe the relevant patent if it contains a two-dimensional and three-dimensional sensor that are implemented in one piece of hardware. . . . It strikes the Court that that issue may get resolved via claim construction, or, if not, then pursuant to a later dispute (perhaps at summary judgment) regarding infringement. But those steps in the case are still to come.

He also rejected the ...

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Judge Andrews Puts Accused Infringer on Notice that "If It Causes a Mistrial by Poor Preparation or Poor Judgment in Questioning [Certain Witnesses], It Will, at a Minimum, Have to Pay [the Patentee's] Attorney Fees"

Andrew E. Russell, Aug. 22, 2022
Expert Witness Trial

Be Careful
Josh Frenette, Unsplash

In a pair of orders last week in Shopify Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA (D. Del.), Judge Andrews set out guidelines for the trial testimony of two fact witnesses, who will offer testimony at trial regarding some prior art references (among other things).

The procedural background here is surprising. The patentee moved in limine to exclude the testimony of these witnesses, and the Court addressed the motion at a pre-trial status conference. There, the Court directed that the parties depose the witnesses and that the accused infringer submit proffers of the testimony that will be offered at trial.

That a Lot of Briefing

The parties then filed a stipulation setting …

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Impossible-to-Reconcile Federal Circuit Precedent Results in Denial of § 101 Motion

Andrew E. Russell, Aug. 20, 2022
Motion for Judgment on the Pleadings FRCP 12(b)(6)

Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2?
Federal Circuit on the left vs. Federal Circuit on the right. Will we get to see round 2? Charl Folscher, Unsplash

We talked a couple of days ago about how, in Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), Chief Judge Connolly stayed the action after raising plaintiff's inadequate disclosures at a § 101 hearing.

But, at the same hearing, plaintiff actually prevailed on the § 101 motion—and Chief Judge Connolly made some notable comments about how the Federal Circuit has responded to his previous § 101 decisions, and what that means for cases going forward.

Case 1, Universal Secure: Affirmed

The first case, Universal Secure Registry LLC v. Apple Inc., …

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Chief Judge Connolly Stays Another Action Pending Threshold Discovery on Litigation Funding, After Well-Written Objection by Defendant

Andrew E. Russell, Aug. 18, 2022
FRCP 7.1 Litigation Funding

IP Edge? Is that you?
IP Edge? Is that you? Ahmed Zayan, Unsplash

We've talked a lot about Judge Connolly's April 2022 standing orders on disclosure statements and litigation funding, including earlier this month when we Judge Connolly stayed an action after a plaintiff failed to fully comply with those orders.

(Plaintiff in that action, by the way, filed an updated disclosure statement claiming it has no knowledge to disclose—we'll have to see how the Court responds to that).

Yesterday, it happened again, but it was triggered by a clever filing by a defendant. In Longbeam Technologies LLC v. Amazon.com, Inc., C.A. No. 21-1559-CFC (D. Del.), the Court put an order on the docket for the parties to comply with its standing orders:

ORAL ORDER: The parties are directed to certify within five days that they have complied with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Disclosure Statements Required by Federal Rule of Civil Procedure 7.1. The parties are also reminded of their obligation to comply with Chief Judge Connolly's April 18, 2022 Standing Order Regarding Third-Party Funding Arrangements. Ordered by Judge Colm F. Connolly on 5/13/2022. (nmf) (Entered: 05/13/2022)

In response, plaintiff filed an updated Rule 7.1 statement but, as far as I can tell, no litigation funding

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Judge Bibas Notes Delaware Split Regarding Unclean Hands Counterclaims in Patent Cases

Andrew E. Russell, Aug. 16, 2022
MTD Motion to Dismiss

Hand Washing
Tim Mossholder, Unsplash

In an opinion on Friday, visiting Judge Stephanos Bibas of the Third Circuit pointed out a split in District of Delaware cases regarding whether a party can bring unclean hands counterclaims in patent cases:

Nor does TexasLDPC persuade me this declaratory-judgment counterclaim fails as a matter of law. True, courts disagree whether “unclean hands” can support a declaration that a patent is unenforceable. Compare In re Gabapentin Patent Litig., 649 F. Supp. 2d 340, 348 (D.N.J. 2009) (concluding it cannot), and Kimberly-Clark Worldwide, Inc. v. Cardinal Health 200, LLC, 2012 U.S. Dist. LEXIS 104983, at *2–3 (D. Del. Jul. 27, 2012) (same),[ ]with The Meds. Co. v. Teva Parenteral Meds., Inc., 2011 WL 13141923, at *1 n.2 (D. Del. Oct. 6, 2011) (denying motion to dismiss or strike unclean hands counterclaim).

Judge Bibas sided with the cases holding that "unclean hands" is a proper counterclaim in a patent action:

Still, I will not stop Defendants from demanding a declaratory judgment about the unclean-hands doctrine. In my view, I may grant such relief. See Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1025–26 (Fed. Cir. 2008) (“[A] district court ...
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Judge Andrews Rejects Attempt to Fix § 101 Issues via Amended Complaint (with Prejudice)

Andrew E. Russell, Aug. 15, 2022
Amended Complaint Motion to Dismiss

Apples at which the patentee will not be getting a third bite.
Apples at which the patentee will not be getting a third bite. Pierpaolo Riondato, Unsplash

Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).

He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:

Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.

Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)

Id. at 19.

Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:

The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...
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